Yahoo! Inc. v. Value Domain c/o Value-Domain Com and Digirock, Inc.
Claim Number: FA0905001260975
Complainant is Yahoo!
Inc. (“Complainant”), represented by David
M. Kelly, of Finnegan, Henderson, Farabow, Garrett &
Dunner, L.L.P.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <flickr.org> and <wallpaper-flickr.com>, registered with eNom, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 5, 2009; the National Arbitration Forum received a hard copy of the Complaint on May 6, 2009.
On May 5, 2009, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <flickr.org> and <wallpaper-flickr.com> domain names are registered with eNom, Inc. and that Respondent is the current registrant of the names. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On May 13, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 2, 2009 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@flickr.org and postmaster@wallpaper-flickr.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 5, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <flickr.org> and <wallpaper-flickr.com> domain names are identical and confusingly similar, respectively, to Complainant’s FLICKR mark.
2. Respondent does not have any rights or legitimate interests in the <flickr.org> and <wallpaper-flickr.com> domain names.
3. Respondent registered and used the <flickr.org> and <wallpaper-flickr.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Yahoo! Inc., is the owner of the FLICKR mark,
registered with the United States Patent and Trademark Office (“USPTO”) (Reg.
No. 3,455,275 issued June 24, 2008; filed May 10, 2005) and other governmental
trademark authorities worldwide, including
Respondent registered the disputed domain names and <wallpaper-flickr.com> and <flickr.org>
on March 2007 and November 2008, respectively.
Respondent is using the disputed domain names to resolve to websites
containing click-through links, which further resolve to websites of
Complainant and Complainant’s competitors.
Respondent has been subjected to three previous adverse UDRP
decisions. See Leo Palace 21 Corp. v. Value-Domain Com (WIPO D2008-0607)
(transferring domain name); see also
Monclear Maison SpA v. Value Domain, DigiRock, Inc. (WIPO D2008-0607)
(transferring domain name); see also
Wikimedia Found. Inc. v. Value-Domain and DigiRock Inc. (WIPO D2008-0607)
(transferring domain name). Additionally,
Respondent was a defendant in civil proceedings initiated by Complainant which
similarly resulted in transfer of the disputed domain name to Complainant. See Yahoo! Inc. v. yahooahtos, et al. No. CV-1441-JCC/TRJ
(E.D.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Panel concludes that Complainant has satisfied Policy ¶
4(a)(i) based on the registration of its FLICKR mark
with the USPTO and other governmental trademark authorities throughout the
world. See Google, Inc. v. DktBot.org,
FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant
had established rights in the GOOGLE mark through its holding of numerous
trademark registrations around the world); see
also Am. Int’l Group, Inc. v. Morris, FA 569033
(Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG
mark through registration of the mark with several trademark authorities
throughout the world, including the United States Patent and Trademark office
(‘USPTO’)”). The Panel further concludes
that Complainant’s CLUB ONYX mark dates back to the filing of the mark with the
USPTO, which precedes Respondent’s registration of the disputed domain
names. See Hershey
Complainant alleges that Respondent’s <flickr.org> domain name is identical to
Complainant’s FLICKR mark. The <flickr.org>
domain name incorporates
Complainant’s FLICKR mark in its entirety with the addition of the generic
top-level domain “.org.” Respondent’s <flickr.org> domain name fails to
sufficiently distinguish itself from Complainant’s FLICKR mark; it is well
established that generic top-level domains are irrelevant for the purposes of a
Policy ¶ 4 (a)(i) analysis. See Reichert, Inc. v. Leonard, FA 672010 (Nat. Arb.
Forum May 24, 2006) (“The disputed domain names are identical to Complainant’s
mark, but for the addition of a generic top-level domain suffix (“.com” or
“.net”)…”). Thus,
the Panel finds that Respondent’s <flickr.org> domain name is
identical to Complainant’s FLICKR mark.
Complainant further
alleges that Respondent’s <wallpaper-flickr.com> domain name is confusingly
similar to its FLICKR mark. Respondent’s
<wallpaper-flickr.com> domain name also incorporates Complainant’s
FLICKR mark in its entirety, with the addition of the generic term “wallpaper,”
a hyphen between the terms and the affixation of the generic top-level domain
“.com.” The addition of the generic term
“wallpaper” relates to Complainant’s business and therefore fails to remove
Respondent’s <wallpaper-flickr.com> domain name from the realm of
confusing similarity with Complainant’s FLICKR mark. The Panel finds that the addition of a hyphen
and a generic top-level domain fails to sufficiently distinguish Respondent’s
domain name from Complainant’s mark. See Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb.
Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a
term descriptive of Complainant’s business, the addition of a hyphen, and the
addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain
name from Complainant’s mark.”); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000)
(finding confusing similarity where the respondent’s domain name combines the
complainant’s mark with a generic term that has an obvious relationship to the
complainant’s business). Therefore, the Panel concludes that
Respondent’s <wallpaper-flickr.com> domain name is confusingly
similar to Complainant’s FLICKR mark.
Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks all rights and legitimate interests in the disputed domain names. For the purposes of a Policy ¶ 4(a)(ii) analysis, Complainant must present a prima facie case in support of its allegations, and then the burden shifts to Respondent. Respondent then has to put forth evidence to bring themselves within the purview of Policy ¶ 4(c), establishing rights or legitimate interests in the disputed domain names. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). Complainant has presented a sufficient prima facie case in these proceedings and Respondent has failed to respond to Complainant’s allegations. From this failure, the Panel may infer that Respondent lacks any rights or legitimate interests in the disputed domain names. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint). The Panel now chooses to evaluate the evidence to determine whether Respondent has any rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).
Complainant alleges that Respondent lacks rights and
legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii) because Respondent is not commonly known by the
disputed domain names. The WHOIS
information reveals the registrant as “Value Domain c/o Value-Domain Com and
Digirock, Inc.,” which suggests that Respondent is not commonly known by the <flickr.org>
and <wallpaper-flickr.com>
domain names. Moreover, there is no evidence
in the record to suggest otherwise. The
Panel therefore concludes that Respondent is not, and has never been, commonly
known by the disputed domain names. See M. Shanken Commc’ns v.
WORLDTRAVELERSONLINE.COM, FA
740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not
commonly known by the <cigaraficionada.com> domain name under Policy ¶
4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding
that the respondent was not commonly known by the <coppertown.com> domain
name where there was no evidence in the record, including the WHOIS
information, suggesting that the respondent was commonly known by the disputed
domain name).
The disputed domain
names resolve to websites containing click-through links which further resolve
to websites of Complainant and Complainant’s competitors. Complainant alleges that Respondent is
presumably profiting from such use.
Thus, the Panel concludes that such use does not constitute a bona
fide offering of goods or services or a legitimate noncommercial or fair
use pursuant to Policy ¶¶ 4(c)(i) or (iii),
respectively.
See Bond & Co. Jewelers, Inc. v.
Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent has previously been subjected to an adverse civil
court decision requiring Respondent to transfer domain names incorporating
Complainant’s YAHOO mark to Complainant.
See Yahoo! Inc. v. yahooahtos, et al. No. CV-1441-JCC/TRJ (E.D.
Complainant contends that Respondent’s registration and use of the disputed domain names constitutes bad faith registration and use under Policy ¶ 4(b)(iv) because Respondent intentionally attempts to attract Internet users, for financial gain, to its domain names by creating a likelihood of confusion with Complainant and its FLICKR mark. Additionally, the domain names and resolving websites contain click-through links which further resolve to websites of Complainant’s competitors. The Panel presumes that Respondent is profiting from such use. See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). Therefore, the Panel concludes that Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Complainant has satisfied Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <flickr.org> and <wallpaper-flickr.com> domain names be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: June 18, 2009
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum